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Tuesday, 6 September 2016

Donut maker gored by University of Texas over a fan favourite pastry

Donut Taco Palace in Austin, Texas, is famous for their ‘Longhorns donuts’. These donuts are modelled after the Hook ‘em Horns hand gesture which is made in support of the University of Texas’ Longhorns American football team. These donuts of allegiance satisfied the sweet tooth of many Longhorns fans until last month, when the University of Texas became aware of the situation. They sent a cease and desist letter to the owner of the shop, Angel Feng, citing trademark infringement.

The University of Texas, referring to the donuts, stated that,

“…UT is understandably concerned about your use of the LONGHORN Marks in this manner…We trust that, now that these rights have been brought to your attention you will take the appropriate steps to discontinue sales of the ‘Longhorn Donuts’ and refrain from any other uses of the University’s marks.”

The University has a trademark in the word ‘Longhorns’.  It is unclear whether the Hook ‘em Horns gesture is a registered character mark as the trademark registry records do not display an illustration and it does not appear on the University’s branding website. If it is not registered, the University would have to rely on unfair competition to prevent further use of this mark.


Longhorns fans displaying Hook 'em Horns
Trademark Law

Under s.32 of the Lanham Act, a trademark is infringed where a person, without the consent of the mark holder, uses the mark in commerce, in a way which is likely to cause confusion. In this case, if referring to the donuts as ‘Longhorns’ makes consumers think the the University has a connection with the donuts, infringement has occurred.

The factors for assessing confusion are set out in Polaroid Corp v Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) and include the strength of the mark, the degree of similarity of the marks, the degree of similarity of the products, the likelihood that the senior user would expand, actual confusion, the defendant’s motive and good faith, the quality of the defendant’s product, the sophistication of the buyer class.

Badge of allegiance or
confusing trademark infringement?
Based on these factors, a finding of confusion is unlikely. Although the ‘Longhorns’ mark is well-know due to the popularity and history of the football team, and the marks are identical, the products are not similar as ‘Longhorns’ is registered for apparel and gourmet foods. It is unlikely that the University would expand into pastries based on the merchandise they currently sell. The donut shop was motivated to make the donut after receiving a request for the Hook ‘em Horns shape from a customer. The donut shop also does other hand gestures such as thumbs up and the peace sign, making it appear that the shop is acting in good faith.

There was no evidence of actual confusion presented by the University, and it is important to note that confusion does not mean call to mind, as set out in University of Notre Dame v J.C Gourmet Food Imports Co., Inc., Appelle, 703 F.2d 1372 (Fed. Cir.. 1983). In that case, University of Notre Dame opposed the registration of ‘Notre Dame’ for cheese. The U.S Court of Appeal held that;

“Likely…to cause confusion” means more than the likelihood that the public will recall a famous mark on seeing the same mark used by another. It must also be established that there is a reasonable basis for the public to attribute the particular product or service of another to the source of the goods or services associated with the famous mark. To hold otherwise would result in recognising a right in gross, which is contrary to the principles of trademark law…”

Consumers who purchase ‘Longhorns donuts’ are more likely to remember their favourite football team than think that the donuts are actually authorised by the university.

Unfair Competition
If the Hook ‘em Horns gesture is not a registered mark, the University would have to rely on unfair competition law under s.43(a) of the Lanham Act to prevent the donut shop from using the hand gesture shape. In order to do this, it would have to be shown that the Hook ‘em Horns gesture is capable of being registered. The mark is likely to be registrable as it does not fall foul of s.2 of the Lanham Act. The only issue may be existing registrations as this hand gesture is also used by fans of rock music, but such registrations are unlikely to cover donuts.

Donut Taco Palace is not looking for a fight
The University would then have to prove there is a likelihood of confusion, using the same Polaroid factors set out above. Again, it is unlikely that the shape of the donuts will result in people being confused as to source, as consumers are probably aware that these donuts are simply a form of allegiance rather than a University authorised product. 

The Donut Taco Palace should be able to sell their ‘Longhorn donuts’ as it is unlikely that they are infringing the University’s trade mark. The shop has changed the name of the donut to ‘El Toro’ but continues to make it in the same shape.  The owner stated, “It wastes time to fight back. It’s not worth it.” Unfortunately for the donut shop, this is a typical example of trademark law being abused by a party in a dominant position to the detriment of a small business owner.



6 comments:

Aaron Wood said...

Interesting claim. I think it might end up biting them on the ass, though! Streisand effect anyone?

Hope this isn't a fumbled attempt to get a settlement so that the UoT can do their own "horned" confectionery without risk of suit.

Kant said...

Confusingly similar to the I-L-Y sign?

Peter Smith said...

The University does have a registration of the gesture as an image mark (number 4535612) but only in respect of "Decals; decorative decals for vehicle windows; stickers; shirts; t-shirts".

Jamer Hetfield said...

Since the gesture as such has already been used by many metal fans in the past, only specific representations of the gesture might still be protectable. It's unlikely that the pastries shown in the picture here look very similar to the university's merchandise. I also have standard emojis with this gesture in various smartphone apps.

More importantly: What on earth does the university have to gain by sending such a letter? Before the letter they had some free and positive publicity - if the pastries taste as good as they look that is, but if not that would only reflect on the donut shop, not on the university.
After the letter they only have free and negative publicity. And if they expected to obtain huge amounts of license fees for allowing the shop to sell this pastry, they'd better paid him a visit, offered him some tickets and discussed the issue in a more friendly manner.

Gilman Grundy said...

"What on earth does the university have to gain by sending such a letter?"

There are some stupid, stupid people in this world, and some of them seem to be in a position to lean on in-house counsel to "do something" about what they perceive as trademark infringement, but which no-one in their right mind could see as a problem.

Anonymous said...

On the other hand, LACK of policing one's marks is dangerous, and can lead to genericide ...

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